JAMES G. WILSON, APPELLANT, v. ANDREW P. SIMPSON

THIS was an appeal from the Circuit Court of the United States for Louisiana.

It was a continuation of the case of Simpson et al. v. Wilson, reported in 4 Howard, 710, where a statement of the case is given, which need not be here repeated. All the documents relating to the patent and transfer of Woodworth's planing-machine are set forth in extenso in the case of Wilson v. Rousseau et al., 4 Howard, 647, et seq.

The report of the case in 4 Howard shows that the two following questions were certified to this court, viz.:––

'1. Whether, by law, the extension and renewal of the said patent granted to William Woodworth, and obtained by William W. Woodworth, his executor, inured to the benefit of the said defendant, to the extent that said defendant was interested in said patent before such renewal and extension.

'2. Whether, by law, the assignment of an exclusive right to the defendant, by the original patentee or those claiming under him, to use said machine, and to vend the same to others for use, within the county of Escambia, in the Territory of West Florida, did authorize said defendant to vend elsewhere than in said county of Escambia, to wit, in the city of New Orleans, State of Louisiana, plank, boards, and other materials, products of a machine establish and used within the said County of Escambia, in the Territory of West Florida.'

On the 18th of April, 1846, the decisions of the Supreme Court in these questions were certified to the Circuit Court, as follows:––

'1. That, by law, the extension and renewal of the said patent granted to William Woodworth, and obtained by William W. Woodworth, his executor, did not inure to the benefit of said defendant to the extent that said defendant was interested in said patent before such renewal and extension. But the law secured to persons in the use of machines at the time the extension takes effect the right to continue the use of the same.

'2. That an assignment of an exclusive right to use a machine, and to vend the same to others for use, within the specified territory, does authorize an assignee to vend elsewhere, out of the said territory, plank, boards, and other materials, the product of such machine.'

Thereupon, leave was granted by the Circuit Court to the defendant, Forsyth, to amend his plea, and to the complainant to amend his bill.

And thereupon the complainant amended his bill,––

1. By charging that the mutual deed between Woodworth and Strong of the one part, and the assignee of Emmons's patent (before mentioned), was procured by the latter by fraud upon Woodworth and Strong, not discovered until the extension of the patent.

2. That the defendants had put in operation one new machine since the extension of the patent of 1842 took effect, and that they had rebuilt, by the addition of new parts, being substantial parts of Woodworth's invention, the old machines which they had in actual use at the expiration of the first term of the patent, so that they were practically no longer the same machine; and thus that the use of those machines, under the color of machines which had been in actual use at the expiration of that term, was a fraud upon the law.

Issue was joined upon these new matters. Evidence was taken upon them, as well as upon the question of the extent of infringement.

It is not necessary to insert this evidence, because the substance of it is stated in the opinion of the court.

On the 4th of May, 1849, the cause came on to be heard before the Circuit Court, upon the bill, answers, replication, exhibits, and evidence, when the court decreed that the bill should be dismissed.

The complainant appealed to this court.

The cause was argued by Mr. Seward and Mr. Webster, for the appellant, and by Mr. Gilpin and Mr. Westcott, for the appellees.

The counsel for the complainant contended,––

1. That the mutual deed executed by and between William Woodworth, James Strong, and William Tyack, D. H. Toogood, Daniel Halstead, and Uri Emmons, was procured from the said Woodworth and Strong by fraud, and is therefore void; and that this fraud vitiates and avoids the defendants' title or right to the use of Woodworth's invention.

2. That the defendants' machines are used in fraud of the law, and in violation of the complainant's rights.

In support of the first proposition it was urged, that Woodworth was the inventor of the machine, which was of great value, and that the consideration which was received by Woodworth and Strong in the mutual deed, viz. that of receiving an assignment of Emmons's rights, was of no value whatever, because Emmons had no rights to convey; and that this was an intentional fraud upon Woodworth and Strong, practised by Toogood, Halstead, and Tyack. It was also urged, that the fraud thus established vitiated and avoided the claim of the defendants, because the mutual deed secures no part of the franchises of the extended term to assignees of the first term. Whatever they have is derived only from the proviso in the eighteenth section of the act of July 4, 1836. Those claiming the benefit of the extension must be lawfully possessed of the right at the close of the first term. But they acquire that interest only by virtue of a valid assignment. It must be a lawful title, capable of carrying all the incidental advantages, whether conferred by the deed or conferred by law.

Proposition II. The defendants' machines are used in fraud of the law, and in violation of complainant's rights.

The thing patented means the machine, which is a thing that produces, and is not itself a product. It is proved that a set of knives for surface work will do good work for from sixty days to three months. That a Woodworth machine cannot be operated more than three months, without making the service knives, and the cutters for tonguing and grooving, anew.

In the case of Wilson v. Rousseau and Easton, 4 Howard, 646, it was held that, under the eighteenth section of the act of 1836, the exclusive right to make, use, and vend the thing patented is vested in the patentee, with a reservation in favor of the assignees or grantees of the right to use the thing patented. That is to say, all assignees or grantees of the right to use the thing patented, who had machines in use at the time of the renewal, are by this reservation protected in the continued use of the specific machine or machines, but specially excluded from the right to make.

The reservation is specially limited to the continued use of the thing patented.

Mr. Justice Nelson, in the case referred to, (4 How. 646,) says,–'The clause, in terms, seems to limit studiously the benefit, or reservation, or whatever it may be called, under or from the new grant, to the naked right to use the thing patented; not an exclusive right even for that, which might denote monopoly. Nor any right at all, much less exclusive, to make and vend. That seems to have been guardedly omitted.'

There is a broad distinction between the continued use of the invention, and the continued use of the machine patented. The former necessarily carries with it the right to construct, whilst the latter excludes it. This distinction is clearly drawn by Mr. Justice Nelson in the same case (4 How. 683). He says,–'It may be said that the 'thing patented' means the invention or discovery, as held in McClurg v. Kingsland, 1 How. 202, and that the right to use the 'thing patented' is what, in terms, is provided for in the clause. That is admitted; but the words, as used in the connection here found, with the right simply to use the thing patented, not the exclusive right, which would be a monopoly, necessarily refer to the patented machine, and not to the invention; and indeed it is in that sense that the expression is to be understood, generally, throughout the patent law, when taken in connection with the right to use, in contradistinction to the right to make and sell.' Again:–'The 'thing patented' is the invention; so the machine is the thing patented, and to use the machine is to use the invention, because it is the thing invented, and in respect to which the exclusive right is secured, as is also held in McClurg v. Kingsland. The patented machine is frequently used as equivalent for the 'thing patented,' as well as for the invention or discovery, and no doubt, when found in connection with the exclusive right to make and vend, always means the right of property in the invention,–the monopoly. But when in connection with the simple right to use, the exclusive right to make and vend being in another, the right to use the thing patented necessarily results in a right to use the machine, and nothing more.' It is therefore unquestionable, under this ruling of the Supreme Court, that the reservation is strictly limited to a right to the continued use of the specific machine or machines legally in use at the time of the renewal.

Let us ascertain with precision what this reservation is. It is not a reservation of the entire right to use the invention, as was ruled in the case of McClurg v. Kingsland, for the doctrine on which that case rests was expressly ruled out in the case of Wilson v. Rousseau and Easton, and the reservation expressly limited to the continued use of the specific machine or machines in existence at the time of the renewal.

It necessarily results from this ruling, that the reservation applies only to such inventions as are embodied in tangible, material form. Processes which are only directory, and simply teach how a product or result is to be obtained, do not come within the reservation, because these have no visible material existence;–such, for instance, as the process of tanning leather by submitting hides to the chemical action of a solution of such substances as contain the tannin principle; the process of curing India-rubber by mixing it with sulphur, and then subjecting it to the action of artificial heat, by which process this valuable substance is so changed as not to be affected by the changes of temperature, and by which it is also rendered insoluble; the various processes of bleaching fibrous and textile substances; the processes of fixing colors on fabrics by the use of what are called mordants, which, by their chemical action on the colors, render them insoluble in water; Daguerreotyping, which consists in preparing the surface of a metal plate, with certain chemical agents, to render it so sensitive to the chemical action of light as to receive the impression of the lights and shadows of any object reflected on its surface; and a variety of other processes in the useful and fine arts, too numerous to specify, but which present some of the greatest triumphs which modern inductive science has applied to the wants of man.

All these do not come under the reservation of the 18th section of the act of 1836, as expounded in the case of Wilson v. Rousseau and Easton, because they have no tangible material existence. They are simply mental processes, which direct how and what matters to treat to produce the required results, and when the results are produced there is an end of the thing patented. True, the application of the process may require complex and costly apparatus; but unless such apparatus, as is sometimes the case, be not in itself the subject-matter of patent, the reservation does not apply, for the thing patented at the time of the renewal has no material existence. It is the thing ...

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